Welcome to Attorney Steve's “Trademark College®” Legal Resource Center. In our modern digital world, your corporate brand, logos, and general reputation are “getting found” online and are how your clients identify you as the source of goods or services.
Vondran Legal is here to help you protect your business by securing trademarks and fighting for your legal rights when a digital dispute arises involving your brand and/or your valuable trademarks and domain names.
VIDEO: Click on the picture above to watch Attorney Steve explain how you can file a federal trademark WITHOUT using an IP lawyer. This is general legal information only and NOT legal advice or a substitute for legal advice. Make sure to SUBSCRIBE to our popular legal channel by clicking on the Red “V” for Victory! We are now over 17,800 subscribers and over 2 million video views. Keep in mind there are risks to filing a trademark without an attorney. Using our name on a trademark application without consent is not permitted under any circumstance.
Trademarks are valuable corporate assets for many companies and it can be for yours as well. We can help your business file for federal trademark protection and help you monitor and protect your trademarks and domain names in the digital marketplace. This may include sending cease and desist letters where appropriate and/or filing federal trademark infringement actions. This blog talks generally about trademarks and services we can provide to help small and medium-sized businesses on up to large nationwide and international companies.
It's a “digital jungle” out there
There are literally millions of brands competing online trying to get found (many startups), and trying to grow their online business. But the problem arises when you have individuals, including competitors, pulling all sorts of online stunts designed to harm your brand and cripple your business. Some examples of common digital disputes include:
1. Cybersquatters – people or businesses who buy domain names (with your trademarks in it) holding them for ransom hoping you will buy it off them for a profit. While these domain squatters can be seen as “entrepreneurial” in nature, they can also be seeking outrageous fees for .com domains which can result in feeling like your company is being held “hostage” if they don't pay exorbitant fees to purchase the domain name which encompasses your brand.
2. User-name squatters – with the proliferation of social media accounts (like Facebook, youtube, Pinterest, Twitter, Instagram, and others) some “entrepreneurs” are signing up on various social media accounts registering accounts with your companies valuable trademarked names and slogans hoping you will buy these accounts off them one day. In essence, they are snapping up account names that involve your trademark. This could require a cease and desist letter, or a trademark lawsuit.
3. Typo-squatters – similarly, there are industrious persons who buy domain names with variations of your trademarks with simple mis-spellings designed to divert your traffic to their website, again, with the hope or expectation that you will pay them off for their purchase of the domain name (an example would be a cybersquatter buying “MicrosostingSoftware.com” and trying to sell that to Microsoft.
4. Competitors who use your trademarks (keywords) in their google pay-per-click-ads or in their WordPress keywords list (or as hashtags on Facebook or Twitter) so that your customers that you worked hard for will end up on their website instead. While not necessarily per se illegal, this is still something to keep an eye on.
5. Competitors engaging in “click fraud“ to try to drive up the price of your google pay-per-click ads;
6. Companies who are using your trademarks and slogans to try to build their business (fake sites);
7. Businesses hijacking your logo (basically tweaking your logo slightly to make their own) and trying to trade off the business goodwill you created;
8. Companies “passing off” products as if they were their own trademarks (selling products on Amazon or eBay that use your logos and trademarks);
9. Competitors launching “suck sites” and “protest sites” that incorporate your federally registered trademarks, sometimes claiming a “parody” defense and often times committing acts of online defamation, disparagement, false light or brand tarnishment.
10. Nefarious groups who create “phishing” websites designed to imitate and impersonate your brand, and with the intent to sabotage or engage in identity theft by stealing personally-identifying information.
This is a shortlist. Is it a digital jungle out there? You bet it is and your brand and reputation are constantly under attack. Our intellectual property law firm can help you survive and thrive in this hostile internet environment. If you do not have IP brand counsel protecting you in the digital age (whether you are a small and emerging business, an athlete on the rise, entertainer, or large organization), you are at a serious disadvantage. We are here to serve as your brand and trademark watchdog.
Our legal services
Here are some services we provide in the area of copyright, trademark and domain name law:
- Trademark registration (we can file trademarks or service marks for low flat rate fees)
- Registering your trademarks with the Trademark Clearinghouse to protect your brand from cybersquatters
- Cease and desist letters (we can send them, and we can respond to them)
- UDRP domain name disputes
- Trademark infringement (state and federal lawsuits)
- Respond to USPTO “office action letters“
- Parody defense to trademark infringement / Anti-SLAPP free speech issues
- Trademark cancellation proceedings with TTAB
- Declaratory judgment actions against trademark bullies
- DMCA agent service (to receive takedown notices)
- DMCA takedown bully response
- ITC 337 proceedings
If you need help with something that is not on this list, email us at the address on the right sidebar, or call us at (877) 276-5084
What is an “Office Action Letter” and how do you respond?
VIDEO: Click on the picture above to hear Attorney Steve discuss responding to trademark refusals and denials (often based on “likelihood of consumer confusion”) in office action letters from the USPTO. Make sure to “SUBSCRIBE” to our popular youtube legal channel. As we like to say “be smarter than your friends” (another trademark we will be filing).
What is Trademark vs. a Service Mark?
Companies can get legal protection for either a “trademark” (which is for “goods”) or a “servicemark” (which describes your services), or even certification marks. Regardless, you will be able to obtain the registered “R” in a circle logo that most companies are looking for. This puts all other potential uses on “notice” of your federal nationwide trademark rights. The federal court in Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1051 explained the difference between trademarks and service marks and summed it up nicely: The term ‘ trademark' includes any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods. The term ‘service mark' means any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish the services of one person. For example, I just applied for a service mark to describe my legal services – “The First Name In Legal Services®” This is a slogan I use on my Facebook live broadcasts on my fan page. The more you use it on the internet, the more fans and followers start to recognize your brand.
Can you Trademark a #Hashtag
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You can apply for a hashtag if it functions as a trademark, if not, you may get this response in an office action letter.
FAILURE TO FUNCTION AS A TRADEMARK
Registration is refused because the applied-for mark, as used on the specimen of record, is used merely as a hashtag and does not function as a trademark or service mark to indicate the source of applicant's services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019); TMEP §§1202, 1202.18.
Determining whether a term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP §1202.04.
A “hashtag” is a form of metadata consisting of a word or phrase preceded by the hash symbol or pound sign “#” (e.g., #chicago, #sewing, and #supremecourtdecisions) or by the term “hashtag” (e.g., hashtag skater). TMEP §1202.18. Hashtags are used on social-networking and microblogging sites to identify or search for a keyword or topic of interest, making it easier for users to find messages with a specific theme or content. Id. Searching for that hashtag will yield each message in which it has been used. In re i.am.symbolic, llc, 127 USPQ2d 1627, 1633 (TTAB 2018) (citing https://en.wikipedia.org/wiki/Hashtag (dated 03/20/2017)). Where a hashtag is used as part of an online social media search term, it generally serves no source-indicating function, because it “merely facilitate[s] categorization and searching within online social media.” TMEP §1202.18.
In addition to their use on social-networking sites to identify or search for a keyword or topic of interest, hashtags also serve as an informational message, as explained in In re i.am.symbolic, 127 USPQ2d 1627, 1633 n.7 (TTAB 2018) (internal citation omitted):
Placing the hash character in front of a word is also used “to informally express context around a given message, with no intent to categorize the message for later searching, sharing, or other reasons . . . . This can help express contextual cues or offer more depth to the information that appears with the hashtag.” Hashtags may be “used to express personal feelings and emotions. For example, with ‘It's Monday!! #excited #sarcasm' in which the adjectives are directly indicating the emotions of the speaker.” However, in such a case the hashtag simply emphasizes the sentiment conveyed by the term that follows, similar to the function of an exclamation point, and does not significantly alter the commercial impression of the wording.
In the present case, the specimen shows the applied-for mark used only as a hashtag in that it is used in connection with a profile on the social-networking/microblogging site Twitter®, and thus denotes a means to identify or search for the keyword “ATTORNEYSTEVE” in an informational manner.
Therefore, the mark consists only of wording coupled with the hash symbol (#) or term “hashtag,” and, as used on the specimen of record, would be perceived merely as a hashtag for searching online social media, and not as a trademark or service mark for particular services.
What is the USPTO?
The USPTO stands for the United States Patent and Trademark Office. This is the office that approves or rejects federal trademarks and keeps a record of trademark ownership, mostly on the “principle” register.
The Trademark Examiner at the USPTO denied my Trademark, can I appeal the office action letter?
Yes. If you applied for a trademark through a company like Trademarkia or LegalZoom and were denied your trademark, contact our law firm to discuss whether appealing the decision by making new arguments, adding new evidence or bolstering your claim for a trademark is a feasible option. Sometimes by careful use of disclaimer language, you can go back to the USPTO and obtain the trademark or service mark. Sometimes there are other legal issues to address, such as a denial based upon “likelihood of consumer confusion.” We offer low flat rate fees for this service.
Another Trademark is seeking to be registered that I believe infringes my federal trademark, can I oppose the registration of their trademark or service mark?
Yes. You can oppose another attempted registration of a federal trademark of registration of another mark is “confusingly similar” to your trademark. There are also other grounds to challenge the registration of a mark.
Does California have a Trademark office?
Yes, California has a trademark and service mark office. Many states have a legal framework to allow your company to seek “state” protection of your trademark. This, however, does not give you the “federal” (nationwide) protection most businesses want, especially since so many are competing on the internet.
Do I need international Trademarks?
Depending on your companies goals and objectives, international trademark registration might be in your best interest. Contact us to discuss your needs in this area.
What is an ITC Proceeding?
The ITC stands for the United States “International Trade Commission.” This body will hear disputes involving trademark claims, and they are authorized to hear such under 19 USC § 1337 which prohibits unfair practices in import trade including:
“(C) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946.”
Our intellectual property law firm can assist you in ITC proceedings. Here is an overview of ITC proceedings.
What is Trade Dress?
Trade dress is a form of trademark and protects things like product design and product packaging. As one federal court put it:
“trade dress involves the total image of a product and “may include features such as size, shape, color, color combinations, texture, or graphics.” Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir.1987). A seller's adoption of a trade dress confusingly similar to a competitor constitutes unfair competition that is actionable under section 43(a) of the Lanham Act. Blau Plumbing, Inc. v. S.O.S. Fix–It, Inc., 781 F.2d 604, 608 (7th Cir.1986). Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because the evaluation of trade dress infringement claims requires the court to focus on the plaintiff's entire selling image, rather than the narrower single facet of the trademark. See Vision Sports, Inc. v. Melville Corp. (9th Cir. 1989) 888 F.2d 609, 613.
Under 15 U.S.C. § 1125(a), to bring a valid claim for trade dress infringement a plaintiff must sufficiently establish that:
(1) the trade dress is nonfunctional;
(2) the trade dress has acquired a secondary meaning;
(3) there is a substantial likelihood of confusion between the plaintiff's and defendant's products.” Art Attacks, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1145 (9th Cir. 2009).
A common example of trade dress protection would be Kentucky Fried Chicken and the colors they use to market their retail restaurant outlets. You can tell it is a KFC store even when you are hundreds of yards away.
Is a domain name protected by Trademark?
A domain name is an internet address. In most cases, a domain name is not subject to qualifying to be registered as a trademark. There have, however, been instances when a domain name could be registered as a federal trademark with the USPTO.
How is a Trademark infringement action different than a UDRP domain name arbitration proceeding?
A trademark infringement action would likely be brought in federal court, while a UDRP is a “domain name dispute” and is normally heard before an arbitrator such as WIPO or National Arbitration Forum. In a UDRP domain arbitration, there are no damages or attorney fees awarded. Click here to see our VIDEOS on UDRP disputes [UDRP Part 1] [UDRP Part 2] [UDRP Part 3] [UDRP Part 4].
Can I get a trademark on my logos for my company?
Yes. Sometimes a trademark holder will file for trademark protection adding a logo to their trademark. Sometimes you want to get a “standard” mark first and do the “logo mark” second – two different trademark applications. That way you can mix and match your name logo (ex. Nike) along with your logo (the swoosh logo”) and mix and match those as may be needed for your marketing and advertising purposes. Call us to discuss.
What is the difference between the TM and the “R” mark?
The “tm” means you are claiming state or common law rights. Once you get the federal registration, you may start using the “R” with a circle around it symbol (®). Federal protection grants broader legal rights.
I got a cease and desist letter from another company telling me I have to shut my business down, what do I do?
There are a lot of “trademark bullies” out there. Again, it is a digital jungle and some trademark holders overdo it in regard to policing their brand. If you are feeling bullied by a trademark owner (ex. on a Etsy site, or selling on Amazon.com or eBay), contact us to review your case. There is a list of known trademark bullies. While the trademark bully label does not mean they are doing anything illegal per se, it often suggests these companies can be “over the top” in protecting their brands and maybe sending demand letters to cease and desist where no legal rights truly exist. We can review these types of cases and let you know what your legal rights are, and we can help companies legitimately protect and enforce their trademarks.
What do you have to prove to find someone guilty of trademark infringement?
When a court is looking at whether or not there is a “trademark infringement” they will be looking to see if there is a “likelihood of consumer confusion.” Likewise, the USPTO trademark examining attorney will review new trademark applications to see if there is a likelihood of consumer confusion with another existing trademark.
The landmark case in this area of law is the Sleekcraft case which discussed the factors the court (and examiner) will look to in making this determination:
“The likelihood of confusion is the central element of trademark infringement, and the issue can be recast as the determination of whether “the similarity of the marks is likely to confuse customers about the source of the products. Official Airline Guides v. Goss, 6 F.3d 1385, 1391 (9th Cir.1993) (quoting E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.1992)). We have developed eight factors, the so-called Sleekcraft factors, to guide the determination of a likelihood of confusion. 599 F.2d at 348. Applied to this case, they are:
(1) the similarity of the marks;
(2) the relatedness of the two companies' services;
(3) the marketing channel used;
(4) the strength of GoTo's mark;
(5) Disney's intent in selecting its mark;
(6) evidence of actual confusion;
(7) the likelihood of expansion into other markets;
(8) the degree of care likely to be exercised by purchasers.” No one factor is controlling. Each factor is examined and weighed. See GoTo.com, Inc. v. Walt Disney Co. (9th Cir. 2000) 202 F.3d 1199, 1205. Confusing similarity' is another way of stating the ‘likelihood of confusion' See AMF Inc. v. Sleekcraft Boats (9th Cir. 1979) 599 F.2d 341, 350 abrogated by Mattel, Inc. v. Walking Mountain Productions (9th Cir. 2003) 353 F.3d 792.
What is the legal test for infringement of a trademark?
PODCAST: Click on the image above to watch this podcast that discusses the 9 factors federal courts will look at in the 9th Circuit (per the Sleekcraft case) to determine whether or not there has been an infringement. Here is also some case law that discusses:
"To establish trademark infringement, a plaintiff must demonstrate that
(1) its mark is valid;
(2) it is the senior mark;
(3) the defendant's mark is likely to cause confusion in the marketplace.
See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046 (9th Cir.1999).
To establish common law trademark rights in the absence of federal registration, a plaintiff must plead and prove that it is the senior user of the mark with sufficient market penetration to preclude the defendant from using the mark in a specific geographic market. See Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”); Credit One Corp. v. Credit One Fin., Inc., 661 F.Supp.2d 1134, 1138 (C.D. Cal. 2009)
(“A party asserting common law rights must not only establish that it is the senior user, it must also show that it has ‘legally sufficient market penetration' in a certain geographic market to establish those trademark rights.”)
Is a trademark case a Federal Case?
A trademark lawsuit can be filed in state or federal court. Often, where there is a Lanham Act violation (ex. false designation of origin), and the Defendant may try to “remove the state court case to federal court” (under diversity or federal question jurisdiction). We can help when “removal” becomes an issue in your case. Watch our federal court removal VIDEO here.
What does a trademark certificate look like?
What are the damages and remedies for a trademark infringement case?
The general damages a Plaintiff will normally seek in a trademark infringement action are:
- Defendant's profits (minus deductible expenses)
- Damages sustained by the plaintiff
- Injunction to prevent further infringement (See discussion below)
- Lost future profits
- Injury to reputation and goodwill
- Trebling of damages and profits, (in bad-faith cases)
- Costs of action
- Destruction of infringing goods
- Attorney fees, where case is “exceptional” (ex. where there is bad-faith conduct by defendant or counterfeit goods).
APRIL 2020 UPDATE: In a recent United States Supreme Court case, the court held that defendant's profits are recoverable under 1125 even absent a showing of "willful infringement." See Romag Fasteners, Inc. v. Fossil, Inc., et al.
Attorney Steve® discusses the #1 Trademark Problem – NOT searching your trademarks before trying to register with USPTO.
VIDEO: Watch this video from our popular Facebook channel.
There is also interest and other damages that might be recoverable.
Watch Attorney Steve® explain Trademark Infringement Damages
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Will a business and intellectual property law firm take my trademark infringement case on a contingency fee basis?
There are limited circumstances where we would consider taking all or part of your case on a contingency fee basis. Contact us to discuss our flexible fee arrangements. In most cases, we charge a flat rate legal fee for trademark related services.
Can you get an injunction to stop a competitor from infringing your trademark?
Yes. Under the right circumstances, as this federal trademark case points out, a party can seek a federal court injunction to stop infringing conduct of another company. Here is the general legal test:
“A plaintiff is entitled to a preliminary injunction in a trademark case when he demonstrates either:
(1) a combination of probable success on the merits and the possibility of irreparable injury
(2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor.” Sardi's Restaurant Corp. v. Sardie, 755 F.2d 719, 723 (9th Cir.1985).
To establish a trademark infringement claim under section 32 of the Lanham Act or an unfair competition claim under section 43(a) of the Lanham Act, Brookfield must establish that West Coast is using a mark confusingly similar to a valid, protectable trademark of Brookfield's. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979). See also Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1046.”
If you believe you may need an injunction, or are responding to an injunction lawsuit, call us to discuss.
Trademark Law Resources
Contact a Trademark Infringement Lawyer
We help clients with federal copyright and federal trademark and domain name issues nationwide. We offer tenacious legal representation and flexible fee arrangements to make law accessible, and affordable. We can be reached at (877) 276-5084. To learn more about Attorney Steve click here. You can also send us an email via our contact form.
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